Trials@uspto.gov Paper 10
`Tel: 571-272-7822
`Entered: June 13, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`PAYPAL, INC.,
`Petitioner,
`
`v.
`
`MONEYCAT LTD.,
`Patent Owner.
`_____________
`
`Cases IPR2017-00541 and IPR2017-005421
`Patent 8,712,918 B2
`______________
`
`
`
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`BRYAN F. MOORE, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`Tel: 571-272-7822
`Entered: June 13, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`PAYPAL, INC.,
`Petitioner,
`
`v.
`
`MONEYCAT LTD.,
`Patent Owner.
`_____________
`
`Cases IPR2017-00541 and IPR2017-005421
`Patent 8,712,918 B2
`______________
`
`
`
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`BRYAN F. MOORE, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`
`IPR2017-00541 and IPR2017-00542
`Patent 8,712,918 B2
`
`A. DUE DATES
`
`This order sets due dates for the parties to take action after institution
`
`of the above identified proceedings. The parties may stipulate to different
`
`dates for DUE DATES 1 through 5 (earlier or later, but no later than DUE
`
`DATE 6). A notice of the stipulation, specifically identifying the changed
`
`due dates, must be promptly filed. The parties may not stipulate to an
`
`extension of DUE DATES 6 and 7.
`
`In stipulating to different times, the parties should consider the effect
`
`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
`
`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
`
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`
`evidence and cross-examination testimony (see section B, below).
`
`The parties are reminded that the Testimony Guidelines appended to
`
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug.
`
`14, 2012) (Appendix D), apply to this proceeding. The Board may impose
`
`an appropriate sanction for failure to adhere to the Testimony Guidelines.
`
`37 C.F.R. § 42.12. For example, reasonable expenses and attorneys’ fees
`
`incurred by any party may be levied on a person who impedes, delays, or
`
`frustrates the fair examination of a witness.
`
`1. INITIAL CONFERENCE CALL
`
`The parties are directed to the Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48,756 for guidance in preparing for the initial conference call,
`
`and should be prepared to discuss (1) whether, in light of the Board’s
`
`previous CBM2014-00093 Final Decision, and subsequent affirmance of
`
`that decision by the Court of Appeals for the Federal Circuit, the parties
`
`have discussed settling the above identified proceedings, (2) whether, in
`
`
`
`2
`
`
`
`IPR2017-00541 and IPR2017-00542
`Patent 8,712,918 B2
`
`light of the Board’s previous CBM2014-00093 Final Decision, and
`
`subsequent affirmance of that decision by the Court of Appeals for the
`
`Federal Circuit, Patent Owner has considered abandoning the contest, and,
`
`thereby, requesting entry of adverse judgment, and (3) if Patent Owner
`
`intends to file a Patent Owner Response and/or a Motion to Amend, what
`
`effect, if any, the previous CBM2014-00093 Final Decision, and subsequent
`
`affirmance of that decision by the Court of Appeals for the Federal Circuit
`
`should have on this proceeding.2
`
`2. DUE DATE 1
`
`The patent owner may file—
`
`a. A response to the petition (37 C.F.R. § 42.120), and
`
`b. A motion to amend the patent (37 C.F.R. § 42.121).
`
`The patent owner must file any such response or motion to amend by
`
`DUE DATE 1. Patent Owner is reminded that it must confer with the Board
`
`before filing a motion to amend. 37 C.F.R. § 42.121(a). Patent Owner
`
`should contact the Board to request the conference in sufficient time to
`
`ensure that the conference is conducted at least one week before DUE
`
`DATE 1. If the patent owner elects not to file either a response to the
`
`petition or a motion to amend, the patent owner must arrange a conference
`
`call with the parties and the Board. The patent owner is cautioned that any
`
`arguments for patentability not raised in the response will be deemed
`
`waived.
`
`
`2 For purposes of discussion, the parties are directed to the Supreme Court’s
`decision in B & B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293
`(2015) regarding the applicability of issue preclusion.
`
`
`
`3
`
`
`
`IPR2017-00541 and IPR2017-00542
`Patent 8,712,918 B2
`
`
`3. DUE DATE 2
`
`The petitioner must file any reply to the patent owner’s response and
`
`opposition to the motion to amend by DUE DATE 2.
`
`4. DUE DATE 3
`
`The patent owner must file any reply to the petitioner’s opposition to
`
`patent owner’s motion to amend by DUE DATE 3.
`
`5. DUE DATE 4
`
`a. Each party must file any motion for an observation on the cross-
`
`examination testimony of a reply witness (see section C, below) by DUE
`
`DATE 4.
`
`b. Each party must file any motion to exclude evidence (37 C.F.R
`
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
`
`DUE DATE 4.
`
`6. DUE DATE 5
`
`a. Each party must file any response to an observation on cross-
`
`examination testimony by DUE DATE 5.
`
`b. Each party must file any opposition to a motion to exclude
`
`evidence by DUE DATE 5.
`
`7. DUE DATE 6
`
`Each party must file any reply for a motion to exclude evidence by
`
`DUE DATE 6.
`
`8. DUE DATE 7
`
`The oral argument (if requested by either party) is set for DUE DATE
`
`7.
`
`
`
`4
`
`
`
`IPR2017-00541 and IPR2017-00542
`Patent 8,712,918 B2
`
`B. CROSS-EXAMINATION
`
`Except as the parties might otherwise agree, for each due date—
`
`1. Cross-examination begins after any supplemental evidence is due.
`
`37 C.F.R. § 42.53(d)(2).
`
`2. Cross-examination ends no later than a week before the filing date
`
`for any paper in which the cross-examination testimony is expected to be
`
`used. Id.
`
`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
`
`A motion for observation on cross-examination provides the parties
`
`with a mechanism to draw the Board’s attention to relevant cross-
`
`examination testimony of a reply witness because no further substantive
`
`paper is permitted after the reply. See Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The observation must be a
`
`concise statement of the relevance of precisely identified testimony to a
`
`precisely identified argument or portion of an exhibit. Each observation
`
`should not exceed a single, short paragraph. The opposing party may
`
`respond to the observation. Any response must be equally concise and
`
`specific.
`
`
`
`5
`
`
`
`IPR2017-00541 and IPR2017-00542
`Patent 8,712,918 B2
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ……………July 20, 2017 at 1:00PM ET
`
`DUE DATE 1 ........................................................................... Sept. 5, 2017
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................... Nov. 27, 2017
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................... Dec. 27, 2017
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................. Jan. 16, 2018
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ........................................................................... Jan. 30, 2018
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................... Feb. 6, 2018
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................ Feb. 19, 2018
`
`Oral argument (if requested)
`
`
`
`6
`
`
`
`IPR2017-00541 and IPR2017-00542
`IPR2017-00541 and IPR2017-00542
`Patent 8,712,918 B2
`Patent 8,712,918 B2
`
`
`
`
`For PETITIONER:
`For PETITIONER:
`
`
`
`For PATENT OWNER:
`For PATENT OWNER:
`
`
`
`
`
`7
`
`
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